Trials@uspto.gov
`571-272-7822
`
`
`Paper 52
`Entered: June 1, 2017
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`____________
`
`ARISTA NETWORKS, INC.,
`Petitioner,
`
`v.
`
`CISCO SYSTEMS, INC.,
`Patent Owner.
`
`
`
`Case IPR2016-00309
`Patent 7,224,668 B1
`
`
`
`Before BRYAN F. MOORE, MIRIAM L. QUINN, and
`MATTHEW R. CLEMENTS, Administrative Patent Judges.
`
`CLEMENTS, Administrative Patent Judge.
`
`
`
`FINAL WRITTEN DECISION
`35 U.S.C. § 318(a) and 37 C.F.R. § 42.73
`
`
`
`

`

`IPR2016-00309
`Patent 7,224,668 B1
`
`
`I.
`
`INTRODUCTION
`
`Arista Networks, Inc. (“Petitioner”) filed a Petition requesting inter
`
`partes review of claims 1–10, 12, 13, 15–28, 30, 31, 33–43, 48, 49, 51–64,
`
`66, 67, and 69–72 (“the challenged claims”) of U.S. Patent No. 7,224,668
`
`B1 (Ex. 1001, “the ’668 patent”). Paper 1 (“Pet.”). Cisco Systems, Inc.
`
`(“Patent Owner”) filed a Preliminary Response. Paper 7 (“Prelim. Resp.”).
`
`On June 11, 2016, we instituted an inter partes review of claims 1–10,
`
`12, 13, 15–28, 30, 31, 33–36, 55–64, 66, 67, and 69–72 of the ’668 patent.
`
`After institution of trial, Patent Owner filed a Patent Owner Response (Paper
`
`18, “PO Resp.”) and Petitioner filed a Reply (Paper 33, “Pet. Reply”).1
`
`Petitioner relies on the Declaration of Dr. Bill Lin (Ex. 1002). Patent Owner
`
`relies on the Declaration of Dr. Kevin C. Almeroth (Ex. 2006).
`
`Petitioner filed a Motion to Strike (Paper 41) to which Patent Owner
`
`filed an Opposition (Paper 48).
`
`Patent Owner filed a Motion to Strike Petitioner’s Reply (Paper 42) to
`
`which Petitioner filed an Opposition (Paper 44).
`
`An oral hearing was held on March 7, 2017. Paper 49 (“Tr.”).
`
`The Board has jurisdiction under 35 U.S.C. § 6. In this Final Written
`
`Decision, issued pursuant to 35 U.S.C. § 318(a) and 37 C.F.R. § 42.73, we
`
`determine that Petitioner has met its burden of showing, by a preponderance
`
`of the evidence, that all of the claims for which trial was instituted are
`
`unpatentable. Petitioner’s Motion to Strike is dismissed-as-moot. Patent
`
`Owner’s Motion to Strike is dismissed-as-moot.
`
`
`
`1 Patent Owner’s Motion to Seal (Paper 20) and Petitioner’s Motion to Seal
`(Paper 35) were granted in our Order of May 7, 2017 (Paper 51).
`
`2
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`

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`IPR2016-00309
`Patent 7,224,668 B1
`
`
`A. Related Proceedings
`
`The ’668 patent is involved in Cisco Systems, Inc. v. Arista Networks,
`
`Inc., Case No. 4:14-cv-05343 (N.D. Cal.) and Cisco Systems, Inc. v. Arista
`
`Networks, Inc., Network Devices, Related Software and Components Thereof
`
`(II), ITC Inv. No. 337-TA-945. Pet. 1; Paper 6, 1. Petitioner also has filed
`
`IPR2015-00974 and IPR2015-01710. Paper 6, 1. Petitioner also has filed
`
`over a dozen other petitions requesting inter partes review of other patents
`
`owned by Patent Owner: IPR2015-00973 (U.S. Patent No. 6,377,577),
`
`IPR2015-00975 (U.S. Patent No. 8,051,211), IPR2015-00976 (U.S. Patent
`
`No. 7,023,853), IPR2015-00978 (U.S. Patent No. 7,340,597), IPR2015-
`
`01049 (U.S. Patent No. 6,377,577), IPR2015-01050 (U.S. Patent No.
`
`7,023,853), IPR2016-00018 (U.S. Patent No. 8,051,211), IPR2016-00119
`
`(U.S. Patent No. 7,047,526), IPR2016-00244 (U.S. Patent No. 7,953,886),
`
`IPR2016-00303 (U.S. Patent No. 6,377,577), IPR2016-00304 (U.S. Patent
`
`No. 7,023,853), IPR2016-00306 (U.S. Patent No. 7,023,853), and IPR2016-
`
`00308 (U.S. Patent No. 7,162,537).
`
`B. The ’668 patent
`
`The ’668 patent relates generally to an internetworking device, such
`
`as a router, with improved immunity to denial-of-service (“DoS”) attacks.
`
`Ex. 1001, Abstract. At the time, a router typically separated its functionality
`
`into a data plane, responsible for accepting transit packets at input ports and
`
`routing or switching them to output ports, and a control plane, responsible
`
`for higher layer functions, such as establishing routing tables. Id. at 1:52–
`
`59. DoS attacks were commonly directed at the control plane. Id. at 1:59–
`
`67. Attempts to solve such problems were difficult to administer and could
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`IPR2016-00309
`Patent 7,224,668 B1
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`result in poor performance when control-plane policies were applied not
`
`only to control plane packets, but also to transit packets. Id. at 2:24–3:2.
`
`To address these and other issues, the ’668 patent discloses an
`
`internetworking device whose control plane processes are collectively
`
`arranged as a single addressable port such that all packets intended for the
`
`control plane always pass through this designated port, which thereby
`
`provides the ability to better manage control plane traffic. Id. at 3:42–50. A
`
`set of port services unique to the control plane may be applied to the
`
`aggregate control plane port. Id. at 3:54–56.
`
`Figure 1 is reproduced below.
`
`Figure 1 is a block diagram of internetworking device 100, such as a router,
`
`comprising control plane port 140, which defines a single access path
`
`
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`IPR2016-00309
`Patent 7,224,668 B1
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`between central switch engine 130 and control plane 150. Id. at 4:47–67.
`
`Line cards 110 and central switch engine 130 accept packets received on a
`
`given port 120 and route them through to another output port 120. Id. at
`
`5:5–7. Because all packets destined to control plane 150 pass through
`
`central switch engine 130 prior to being routed to functions 155, central
`
`switch engine 130 can be used to implement aggregate control plane
`
`protection. Id. at 5:36–42. Control plane port services determine if a given
`
`packet is destined to a control plane process 150. Id. at 5:56–58. Control
`
`plane port 140 may be a single physical port or may be a virtual address, but
`
`either way, it can be treated as a traditional hardware port to which a full
`
`range of traditional port control features—e.g., rate limiting, access lists,
`
`hierarchical queues based on priority—can be applied to help protect control
`
`plane 150 from a DoS attack, or to provide other quality of service (“QoS”).
`
`Id. at 5:1–4, 5:66–6:44.
`
`C. Illustrative Claim
`
`Of the challenged claims, claims 1, 19, and 55 are independent.
`
`Claim 1 is reproduced below:
`
`1.
`
`An internetworking device comprising:
`
`a plurality of physical network interface ports, each
`a.
`for providing a physical connection point to a network for the
`internetworking device, the ports being configurable by control
`plane processes;
`
`port services, for operating on packets entering and
`b.
`exiting the physical network interface ports, the port services
`providing an ability to control and monitor packet flows, as
`defined by control plane configurations;
`
`a control plane, comprising a plurality of
`c.
`internetworking control plane processes, the control plane
`
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`IPR2016-00309
`Patent 7,224,668 B1
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`
`processes for providing high-level control and configuration of
`the ports and the port services;
`
`d. wherein:
`
`a control plane port entity provides access to
`i.
`the collection of control plane processes, so that a set of
`control plane port services can be applied thereto; and
`
`the control plane port services operate on
`ii.
`packets received from specific, predetermined physical
`ports and destined to the collection of control plane
`processes in a way that is independent of the physical port
`interfaces and services applied thereto.
`
`Ex. 1001, 9:17–40.
`
`D. Evidence Relied Upon
`
`Petitioner relies upon the following references:
`
`Amara
`
`Moberg
`
`US 6,674,743 B1
`
`Jan. 6, 2004
`
`US 6,460,146 B1
`
`Oct. 1, 2002
`
`Ex. 1004
`
`Ex. 1005
`
`Subramanian
`
`US 6,970,943 B1
`
`Nov. 29, 2005
`
`Ex. 1006
`
`Hendel
`
`US 6,115,378
`
`Sept. 5, 2000
`
`3Com, COREBUILDER 3500 IMPLEMENTATION GUIDE, 3Com
`MSD Technical Publications, November 1999 (“CoreBuilder”)
`
`Ex. 1007
`
`Ex. 1009
`
`Pet. 2–3. Petitioner also relies upon the Declaration of Dr. Bill Lin (“Lin
`
`Decl.”) (Ex. 1002).
`
`E. The Instituted Grounds of Unpatentability
`
`We instituted inter partes review based on the following grounds:
`
`References
`Amara & CoreBuilder
`
`Basis Claims challenged
`§ 103 1–6, 8, 9, 15–22, 24–27,
`33–36, 55–58, 60–63, and
`69–72
`Amara, CoreBuilder, & Moberg § 103 7, 23, and 59
`
`6
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`IPR2016-00309
`Patent 7,224,668 B1
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`
`Basis Claims challenged
`References
`Amara, CoreBuilder, & Hendel § 103 10, 12, 13, 28, 30, 31, 64,
`66, and 67
`
`Dec. 23.
`
`II. ANALYSIS
`
`A. Claim Construction
`
`In an inter partes review, claim terms in an unexpired patent are
`
`interpreted according to their “broadest reasonable construction in light of
`
`the specification of the patent” in which they appear. 37 C.F.R. § 42.100(b).
`
`Applying that standard, we interpret the claim terms according to their
`
`ordinary and customary meaning in the context of the patent’s written
`
`description. In re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir.
`
`2007).
`
`Petitioner proposes constructions for “specific, predetermined ports,”
`
`and nine means-plus-function terms. Pet. 6–12. In our Decision on
`
`Institution, we construed only “specific, predetermined ports,” which we
`
`determined “encompasses all ports of the networking device, and is not
`
`limited to a subset of ports.” Dec. 8. Apart from Patent Owner alluding to
`
`its Preliminary Response (PO Resp. 11), neither party contested or addressed
`
`our construction of these terms.2 Accordingly, we see no reason to modify
`
`our prior determination in light of the record developed at trial.
`
`
`
`2 We previously instructed Patent Owner that “any arguments for
`patentability not raised in the [Patent Owner Response] will be deemed
`waived.” Paper 7, 3; see also 37 C.F.R. § 42.23(a) (“Any material fact not
`specifically denied may be considered admitted.”); In re Nuvasive, 842 F.3d
`1376, 1379-1382 (Fed. Cir. 2016) (holding Patent Owner waived argument
`
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`
`“[O]nly those terms need be construed that are in controversy, and
`
`only to the extent necessary to resolve the controversy.” Vivid Techs., Inc. v.
`
`Am. Sci. & Eng’g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999)). The parties
`
`dispute the meaning of “the control plane port services operate on packets
`
`. . . in a way that is independent of the physical port interfaces and services
`
`applied thereto.” Compare PO Resp. 16–22, with Pet. Reply 2–7.
`
`Accordingly, we construe that phrase expressly.
`
` “the control plane port services operate on
`packets received from specific, predetermined physical ports
`and destined to the collection of control plane processes
`in a way that is independent of the physical
`port interfaces and services applied thereto”
`
`Patent Owner argues that “[b]ased on the plain meaning of the claims,
`
`both port services and control plane port services are applied to control plane
`
`packets.” PO Resp. 17. Petitioner counters that “[t]he Challenged Claims
`
`do not require both ‘port services’ and ‘control plane port services’ be
`
`applied to control plane packets.” Pet. Reply 2. For the reasons discussed
`
`below, we agree with Petitioner.
`
`a. Claim language
`
`First, based on the language of the claims, Patent Owner contends that
`
`“services applied thereto” refers to “packets received from specific,
`
`predetermined physical ports and destined to the collection of control plane
`
`processes.” PO Resp. 17–18. According to Patent Owner, “the control
`
`plane packets first pass through the ‘specific, predetermined physical ports’
`
`
`
`addressed in Preliminary Response by not raising argument in the Patent
`Owner Response).
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`IPR2016-00309
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`and ‘port services’ are ‘applied thereto.’ Then the control plane packets
`
`enter the ‘control plane port entity’ where ‘control plane ports services’
`
`operate [execute] on the packets.” Id.
`
`Petitioner counters that “services applied thereto” refers to the
`
`services, if any, applied to the recited “physical port interfaces,” not to the
`
`“packets . . . destined to the collection of control plane processes,” and
`
`provides the following annotated claim element:
`
`
`
`Pet. Reply 3–4. According to Petitioner, “the term ‘thereto’ acts as a
`
`modifier in identifying to what the recited ‘services’ are applied. Because
`
`the object ‘physical port interfaces’ comes immediately before this phrase,
`
`grammar dictates that the term ‘thereto’ references ‘physical port
`
`interfaces.’” Id. at 4. Petitioner contends that “the ‘physical port interfaces’
`
`are what the recited ‘services’ are applied to” and that “this reading is the
`
`only one that removes all ambiguity as to what type of ‘services’ are referred
`
`to in the ‘services thereto’ portion of 1 d.ii—i.e., normal port services.” Id.
`
`at 5. As a result, according to Petitioner, the limitation “requires the control
`
`plane port services to operate on packets in a way that is independent of any
`
`port services that have been applied to a physical port interface, but does not
`
`require a packet to receive normal port services as a prerequisite to receiving
`
`control plane port services.” Id. at 4.
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`
`We agree with Petitioner. The most natural reading of “thereto” is as
`
`a reference to “physical port interfaces” that immediately precedes it in the
`
`limitation. Moreover, we understand “the physical port interfaces” to have
`
`its antecedent basis in the “specific, predetermined ports” recited earlier in
`
`the claim, and we understand “services” to mean the “port services, for
`
`operating on packets entering and existing the physical network interface
`
`ports” recited earlier in the claim. As a result, we agree with Patent Owner
`
`that packets destined for the control plane processes are “received from
`
`specific, predetermined physical ports,” but we do not agree that the claim
`
`language itself requires port services be applied to every packet received on
`
`a physical port. The claim does not recite, for example, “port services, for
`
`operating on every packet entering and exiting the physical network
`
`interface ports.” After considering the parties’ arguments, we find that the
`
`language of this limitation requires that the operation of the “control plane
`
`port services” be “independent of” the physical port interfaces and services
`
`(if any) applied to those interfaces, but does not impose an affirmative
`
`requirement that port services be applied at the physical port interface to
`
`every packet “received from specific, predetermined physical ports and
`
`destined to the collection of control plane processes.”
`
`b. Specification
`
`Patent Owner argues that the Specification describes applying control
`
`plane port services “after, and in addition to, normal input port services.”
`
`PO Resp. 19 (citing Ex. 1001, 9:1–4, 6:12–15). According to Patent Owner,
`
`“the only embodiments described in the specification . . . apply port services
`
`to control plane packets.” Id.; see also id. at 19–22 (identifying description
`
`of applying port services to control plane packets in both the aggregated
`
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`IPR2016-00309
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`control plane services embodiment and the distributed control plane services
`
`embodiment).
`
`Petitioner counters that the ’668 patent “explicitly recognizes that
`
`some packets entering a physical network interface port will not receive
`
`normal port services, but will receive control plane port services, if they are
`
`destined for the control plane.” Pet. Reply 2–3 (footnote omitted) (emphasis
`
`added) (citing Ex. 1001, 6:38–423 (“Since control plane 150 destined
`
`packets will invoke only control plane services, transit traffic and system
`
`performance is minimally impacted.”)). Petitioner also argues that the
`
`Specification “refers to services being applied to ports.” Id. at 5 (citing Ex.
`
`1001, Abstract, 3:54–56, 4:8–12, 6:12–16, 10:24–25, 11:45–46). Finally,
`
`Petitioner argues that Patent Owner is attempting to import a preferred
`
`embodiment into the claim language. Id. at 6–7.
`
`Again, we agree with Petitioner. There is no doubt that the ’668
`
`patent discloses embodiments in which control plane port services are
`
`applied after, and in addition to, normal input port services, as Patent Owner
`
`contends. We are not persuaded, however, that the claims are limited to
`
`
`
`3 At oral argument, Patent Owner argued Petitioner takes this statement out
`of context. Tr. 72:20–73:13. Even when considering this sentence in the
`context of the whole paragraph, however, we are not persuaded it is merely a
`typographical error (i.e., a misplacement of “only” in front of “control plane
`services” instead of in front of “control plane 150 destined packets”). The
`preceding sentence, for example, states that “the user is afforded significant
`control over the flow of traffic destined to the control plane 150 just as if the
`control plane 150 were a hardware interface.” Ex. 1001, 6:37–39. Patent
`Owner’s interpretation, however, would deprive a user of control over the
`flow of traffic destined to the control plane by requiring that such traffic
`always receive normal port services before being forwarded to the control
`plane 150.
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`these embodiments for the reasons discussed above in our analysis of the
`
`claim language. Moreover, our analysis of the claim language is consistent
`
`with the Specification’s disclosure that “[s]ince control plane 150 destined
`
`packets will invoke only control plane services, transit traffic and system
`
`performance is minimally impacted.” Ex. 1001, 6:39–42 (emphasis added).
`
`For all of the foregoing reasons, we determine that the challenged
`
`claims do not require both “port services” and “control plane port services”
`
`be applied to control plane packets.
`
`B. Level of Ordinary Skill in the Art
`
`Petitioner contends that a hypothetical person of ordinary skill in the
`
`art, with respect to and at the time of the’668 patent, would have the
`
`following qualifications:
`
`would have had a Masters of Science Degree (or a similar
`technical Masters Degree, or higher degree) in an academic area
`emphasizing computer networking or, alternatively, a Bachelor
`Degree (or higher degree) in an academic area emphasizing the
`design of electrical, computer, or software engineering and
`having several years of experience in computer network
`engineering and the design of computer networks.
`
`Pet. 5; Ex. 1002 ¶ 9.
`
`Patent Owner’s expert, Dr. Almeroth, essentially agrees:
`
`[A] person of ordinary skill in the field of art would be a person
`with a Bachelor of Science degree, or its equivalent, in electrical
`engineering, computer engineering, computer science, or a
`related field and either a Master of Science degree, or its
`equivalent, in one of those fields or approximately two years of
`related experience in the field of network devices.
`
`Ex. 2003 ¶ 40. Nominally, we determine that the hypothetical person of
`
`ordinary skill in the art would have had either a Masters degree in an
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`academic area involving computer networking, or a Bachelor’s degree in
`
`such an area and several years of work experience in computer networking.
`
`We note, however, that neither party has explained substantively any
`
`significance that the difference in the proffered levels of ordinary skill in the
`
`art would play in the obviousness analysis. See Graham v. John Deere Co.,
`
`383 U.S. 1, 17–18 (1966); Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed.
`
`Cir. 2001) (“[T]he level of skill in the art is a prism or lens through which a
`
`judge, jury, or the Board views the prior art and the claimed invention.”);
`
`Ryko Mfg. Co. v. Nu-Star, Inc., 950 F.2d 714, 718 (Fed. Cir. 1991) (“The
`
`importance of resolving the level of ordinary skill in the art lies in the
`
`necessity of maintaining objectivity in the obviousness inquiry.”). To that
`
`end, we note that the prior art itself often reflects an appropriate skill level.
`
`See Okajima, 261 F.3d at 1355.
`
`C. The Parties’ Post-Institution Arguments
`
`In our Decision on Institution, we concluded that the arguments and
`
`evidence advanced by Petitioner demonstrated a reasonable likelihood that
`
`claims 1–6, 8, 9, 15–22, 24–27, 33–36, 55–58, 60–63, and 69–72 were
`
`unpatentable as obvious over Amara and CoreBuilder, claims 7, 23, and 59
`
`were unpatentable as obvious over Amara, CoreBuilder, and Moberg, and
`
`claims 10, 12, 13, 28, 30, 31, 64, 66, and 67 were unpatentable as obvious
`
`over Amara, CoreBuilder, and Hendel. Dec. 23. We must now determine
`
`whether Petitioner has established by a preponderance of the evidence that
`
`the specified claims are unpatentable over the cited prior art. 35 U.S.C.
`
`§ 316(e). We previously instructed Patent Owner that “any arguments for
`
`patentability not raised in the [Patent Owner Response] will be deemed
`
`waived.” Paper 9, 3; see also 37 C.F.R. § 42.23(a) (“Any material fact not
`
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`specifically denied may be considered admitted.”); In re Nuvasive, 842 F.3d
`
`1376, 1379-1382 (Fed. Cir. 2016) (holding Patent Owner waived argument
`
`addressed in Preliminary Response by not raising argument in the Patent
`
`Owner Response). Additionally, the Board’s Trial Practice Guide states that
`
`the Patent Owner Response “should identify all the involved claims that are
`
`believed to be patentable and state the basis for that belief.” Office Patent
`
`Trial Practice Guide, 77 Fed. Reg. 48,756, 48,766 (Aug. 14, 2012).
`
`With a complete record before us, we note that we have reviewed
`
`arguments and evidence advanced by Petitioner to support its unpatentability
`
`contentions where Patent Owner chose not to address certain limitations in
`
`its Patent Owner Response. In this regard, the record now contains
`
`persuasive, unrebutted arguments and evidence presented by Petitioner
`
`regarding the manner in which the asserted prior art teaches corresponding
`
`limitations of the claims against which that prior art is asserted. Based on
`
`the preponderance of the evidence before us, we conclude that the prior art
`
`identified by Petitioner teaches or suggests all uncontested limitations of the
`
`reviewed claims. The limitations that Patent Owner contests in the Patent
`
`Owner Response are addressed below.
`
`D. Status of CoreBuilder
`as a Prior Art Printed Publication
`
`Before reaching the merits of Petitioner’s obviousness contentions, all
`
`of which are based on CoreBuilder, we must determine as a threshold issue
`
`whether CoreBuilder is a prior art printed publication under 35 U.S.C.
`
`§ 102(b).4 See Pet. 3 (citing Ex. 1009; Ex. 1010). Petitioner has the burden
`
`
`
`4 All references to 35 U.S.C. §§ 102, 103 herein will be pre-AIA.
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`of persuasion to prove unpatentability by a preponderance of the evidence.
`
`See 35 U.S.C. § 316(e); Dynamic Drinkware, LLC v. Nat’l Graphics, Inc.,
`
`800 F.3d 1375, 1379 (Fed. Cir. 2015).
`
`For purposes of instituting trial, we accepted Petitioner’s contention,
`
`unchallenged in the Preliminary Response, that CoreBuilder was available as
`
`§ 102(b) prior art as of November 1999. Dec. 9–10. During trial, however,
`
`Patent Owner challenged that contention (PO Resp. 30–32), and Petitioner
`
`provided additional argument and evidence in reply (Pet. Reply 13–16).
`
`The determination of whether a document is a “printed publication”
`
`under 35 U.S.C. § 102 “involves a case-by-case inquiry into the facts and
`
`circumstances surrounding the reference’s disclosure to members of the
`
`public.” In re Klopfenstein, 380 F.3d 1345, 1350 (Fed. Cir. 2004).
`
`“Because there are many ways in which a reference may be disseminated to
`
`the interested public, ‘public accessibility’ has been called the touchstone in
`
`determining whether a reference constitutes a ‘printed publication’ bar under
`
`35 U.S.C. § 102(b).” Blue Calypso, LLC v. Groupon, Inc., 815 F.3d 1331,
`
`1348 (Fed. Cir. 2016) (quoting In re Hall, 781 F.2d 897, 898–99 (Fed. Cir.
`
`1986)). “A reference will be considered publicly accessible if it was
`
`‘disseminated or otherwise made available to the extent that persons
`
`interested and ordinarily skilled in the subject matter or art exercising
`
`reasonable diligence[] can locate it.’” Id. (quoting Kyocera Wireless Corp. v.
`
`Int’l Trade Comm’n, 545 F.3d 1340, 1350 (Fed. Cir. 2008)).
`
`Having reviewed the parties’ arguments and supporting evidence, we
`
`determine that Petitioner has demonstrated sufficiently that CoreBuilder
`
`([Ex. 1009]) is a printed publication based on the following reasons and
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`factual findings. First, we find that CoreBuilder was shipped with the
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`CoreBuilder 3500 Switch to 3Com customers at least as early as November
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`1999. We base our findings on the testimony of Declaration of Patricia
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`Crawford, an employee of 3COM, filed as Exhibit 1010. We also support
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`our findings based on the indicia of publication found on CoreBuilder,
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`Exhibit 1009.
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`Petitioner asserts that, “[a]s established by the Declaration of Patricia
`
`Crawford ([Ex. 1010]), CoreBuilder ([Ex. 1009]) was shipped with the
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`CoreBuilder 3500 Switch to 3Com customers at least as early as November
`
`1999 and thus is prior art under 35 U.S.C. § 102(b).”5 Pet. 3. Ms. Crawford
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`testifies that
`
`Exhibit 1009 was shipped with the 3Com CoreBuilder 3500
`switch at least as of November, 1999 at least because (1) the
`process used to ensure that proper documentation was shipped
`with 3Com products did not change after I transitioned to a SQA
`Engineer, (2) Exhibit 1009 was given a part number, (3) the
`cover of Exhibit 1009 indicates it was published November,
`1999, and (4) Exhibit 1009 itself indicates it was shipped with
`the CoreBuilder 3500 switch.
`
`Ex. 1010 ¶ 9.
`
`Patent Owner argues that Petitioner’s reliance on the Crawford
`
`Declaration “is an improper incorporation by reference.” PO Resp. 31.
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`Petitioner counters that the citation to the Crawford Declaration is proper
`
`because “[t]he Petition itself recites the necessary facts.” Pet. Reply 13–14.
`
`We agree with Petitioner. Section 42.6(a)(3) of Title 37 of the Code of
`
`Federal Regulations states that “[a]rguments must not be incorporated by
`
`reference from one document into another document.” The Board has found
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`
`
`5 All references to 35 U.S.C. §§ 102, 103 herein will be pre-AIA.
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`improper incorporation by reference where, for example, a petition supports
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`conclusory statements by citing to a declaration that, in turn, includes claim
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`charts purporting to show how certain claim elements were met by the prior
`
`art. Cisco Sys., Inc. v. C-Cation Techs., LLC, IPR2014-00454, Paper 12
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`(PTAB Aug. 29, 2014) (“Cisco”). As explained in Cisco, improper
`
`incorporations by reference impose on the Board’s time by asking us to sift
`
`through the exhibits to locate specific arguments. Cisco at 10. Here,
`
`though, the Petition states that CoreBuilder “was shipped with the
`
`CoreBuilder 3500 Switch to 3Com customers at least as early as November
`
`1999 and thus is prior art under 35 U.S.C. § 102(b)” (Pet. 3), and the cited
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`testimony is factual in nature and is very limited in scope (Ex. 1010 ¶¶ 1–
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`10), both of which mitigate our concern about imposing on the Board’s time
`
`and/or unfairly circumventing word limits. We determine, therefore, that the
`
`citation to the Crawford Declaration is not an improper incorporation by
`
`reference.
`
`Patent Owner also argues that the Crawford Declaration should be
`
`afforded no weight because Ms. Crawford has no personal knowledge of
`
`Exhibit 1009. PO Resp. 31–32. Petitioner replies that Ms. Crawford’s
`
`testimony as to practices and procedures is based on personal knowledge and
`
`is sufficient to meet Petitioner’s burden of proof. Pet. Reply 14–15. We
`
`agree with Petitioner. As an initial matter, Patent Owner’s assertion that
`
`“[t]he Crawford declaration never establishes that Ex. 1009 was ever
`
`shipped with a 3Com product” (PO Resp. 31) is contradicted by Ms.
`
`Crawford’s explicit testimony that “the cover indicates that Exhibit 1009
`
`was first shipped with the CoreBuilder 3500 Switch in November, 1999”
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`(Ex. 1010 ¶ 8). With respect to personal knowledge, Patent Owner cites no
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`law to support the proposition that personal knowledge of Exhibit 1009 is
`
`necessary in order for Ms. Crawford’s testimony to be accorded weight.
`
`Although Ms. Crawford did not author Exhibit 1009, she has personal
`
`knowledge of the practices and procedures involving technical
`
`documentation, such as CoreBuilder, followed by 3Com. Ex. 1010 ¶¶ 3–9.
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`In particular, Ms. Crawford testifies that, “[u]nder the normal procedure at
`
`3Com at the time, when a publication date was included on the front page of
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`3Com documentation, the publication date indicates the date when the
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`documentation was first shipped with the corresponding product.” Id. ¶ 8.
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`Based on this personal knowledge, she testifies that “Published November
`
`1999” on the first page of CoreBuilder “indicates that Exhibit 1009 was first
`
`shipped with the CoreBuilder 3500 Switch in November, 1999.” Id. Patent
`
`Owner suggests that Ms. Crawford’s testimony is relevant only to the period
`
`when she was a technical writer (PO Resp. 31–32), but that suggestion is
`
`contradicted by Ms. Crawford’s testimony that “the process used to ensure
`
`that proper documentation was shipped with 3Com products did not change
`
`after I transitioned to a SQA Engineer” (id. ¶ 10; see also id. ¶ 7) a position
`
`she remained in until the year 2000 (id. ¶ 5).
`
`Finally, we are not persuaded by Patent Owner’s argument that the
`
`publication date on Exhibit 1009 is insufficient evidence of public
`
`availability and is inadmissible hearsay for that purpose. PO Resp. 32
`
`(citing Standard Innovation Corp. v. Lelo, Inc., Case IPR2014-00148, Paper
`
`42, 13–18 (PTAB April 23, 2015)). As Petitioner points out, Standard
`
`Innovation Corp. v. Lelo, Inc. is inapposite because the petitioner in that
`
`case relied solely on a document’s copyright date, whereas Petitioner is
`
`relying on the publication date on Exhibit 1009 in combination with
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`Ms. Crawford’s testimony explaining its meaning and significance. Pet.
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`Reply 15–16. In particular, Ms. Crawford testifies that “Exhibit 1009 was
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`shipped with the 3Com CoreBuilder 3500 switch at least as of November,
`
`1999.” Ex. 1010 ¶ 10). Moreover, Petitioner points out that CoreBuilder
`
`was publicly accessible on the 3Com website. Pet. Reply 15 n.10 (“The
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`document also states: ‘The most current versions of guides and release notes
`
`are available in Adobe Acrobat Reader Portable Document Format (PDF) or
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`HTML from the 3Com World Wide Web site: http://www.3com.com,’ Ex.
`
`1009 at 21.”). In light of the evidence that Exhibit 1009 was shipped to
`
`3Com customers, and available electronically to anyone, as early as
`
`November 1999 (three years before the Nov. 27, 2002, filing date of the
`
`’668 patent), we determine that Exhibit 1009 was “disseminated or
`
`otherwise made available to the extent that persons interested and ordinarily
`
`skilled in the subject matter or art exercising reasonable diligence, [could]
`
`locate it.” SRI Int'l, Inc. v. Internet Sec. Sys. Inc., 511 F.3d 1186, 1194 (Fed.
`
`Cir. 2008) (quoting Bruckelmyer v. Ground Heaters, Inc., 445 F.3d 1374,
`
`1378 (Fed. Cir. 2006)).
`
`E. Claims 1–6, 8, 9, 15–22, 24–27, 33–36, 55–58, 60–63, and 69–72 –
`Obviousness Over Amara and CoreBuilder
`
`Petitioner argues that claims 1–6, 8, 9, 15–22, 24–27, 33–36, 55–58,
`
`60–63, and 69–72 are unpatentable under 35 U.S.C. § 103 as obvious over
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`the combination of Amara and CoreBuilder. Pet. 12–40.
`
` Amara (Exhibit 1004)
`
`Amara, titled, “Method and Apparatus for Providing Policy-based
`
`Services for Internal Applications,” describes a packet-forwarding device that
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`provides policy-based services for internal applications. Ex. 1004, Title,
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`Abstract. Figure 3 is reproduced below.
`
`
`
`Figure 3, above, is a block diagram of packet forwarding device 200.
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`Device 200 includes interfaces 202–206 that are able to transmit packets to
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`and to receive packets from nodes 208–212